Monday, January 06, 2014

Guest post: Betsy Rosenblatt on the case of Sherlock Holmes' two lives

I’m going to turn this over to Betsy Rosenblatt, current
colleague/head of the legal committee of the Organization for Transformative
Works and Assistant Professor of Law/Director, Center for Intellectual Property
Law at Whittier Law.Professor
Rosenblatt is also the author of an article
about Holmes-related IP issues, so she’s the best possible commentator.

Arthur Conan Doyle’s Sherlock Holmes canon, comprising 56
short stories and 4 novels, are among the most read and most-adapted works in
recent history.In most of the world,
copyright in all of the stories and novels has expired.In the U.S., copyright protection has expired
on some of the stories but, thanks to the Copyright Term Extension Act,
copyright protection remains for ten stories, first published after 1923 in the
U.S. under the collective title “The Case-Book of Sherlock Holmes.”These rights belong to a company called the
Conan Doyle Estate (“CDE”), which has licensed them to a number of adapters,
including Warner Brothers (for the Robert Downey Jr. Sherlock Holmes films),
CBS-TV (for Elementary), and the BBC (for its distribution of its Sherlock
series in the U.S.).

On December 23, 2013, Judge Ruben Castillo of the Northern
District of Illinois ruled in the case of Klinger v. Conan Doyle Estate, Ltd. that U.S. copyright protection had
expired on all elements of the Sherlock Holmes canon that were first introduced
before 1923.That part of the case is
straightforward, and no doubt correct.

But the case also has broader implications worth
exploring.Most notably, while several
courts have held that “increments of expression” original to derivative works
may be protectable, they’ve provided little to no guidance about what
constitutes a protectable “increment of expression” about a copyrightable
character.This ruling sets the bar
uncomfortably low—implying that any new fact or trait about an already
distinctly delineated character may create a new, protectable version of that
character, no matter how generic, predictable, or insignificant that
trait.

1. Copyright in serialized characters

Klinger structured his complaint very narrowly to focus on
copyright expiration.He could have
asked whether his anthology or similar commercial derivative works constituted
copyright fair use.He could have asked
for a declaration concerning the CDE’s claim (made elsewhere) that it has
trademark rights in the word mark “Sherlock Holmes” for a number of classes of
goods, including detective fiction.As
it was, Klinger asked only for a declaration concerning the copyright status of
the pre-1923 story elements and post-1923 stories.

This narrow framework allowed the court to rule on summary
judgment, reaching the generally self-evident conclusion that story elements
first published prior to 1923 are no longer protected by copyright, and those
protectable elements introduced later are still protected.This is a straightforward and wholly
reasonable result for the characters, plots, and story elements that appeared
exclusively in pre-1923 works.But what
of characters that appeared in both pre-1923 and post-1923 works?

The CDE offered what the court described as a “novel legal
argument” that the characters of Sherlock Holmes and Dr. Watson continued to be
developed throughout the post-1923 stories, and that therefore, the characters
themselves would not enter the public domain until their last story did.The court rejected this argument,
explaining—in line with Silverman v. CBS and a number of other cases that have
held similarly—that “where an author has used the same character in a series of
works, some of which are in the public domain, the public is free to copy
[character and] story elements from the public domain works,” but not from
still-protected works.The same rule
would apply broadly to not only Holmes and Watson, but also other characters
created early in the 20th century and serialized over time, like G.K.
Chesterton's Father Brown, Edgar Rice Burroughs' Tarzan, and Agatha Christie's
Hercule Poirot.

Although the court explicitly avoided deciding “the
copyright status of the Sherlock Holmes character” as a whole (fn 8), as a
practical matter, the result of this opinion is that the characters of Holmes
and Watson are in the public domain.To
some extent, this result is an artifact of the manner in which Klinger sought
relief:in an exhibit to his complaint,
he listed all of the story elements that he argued were on the public domain,
including a number of complete characters (such as Inspector Lestrade, Mrs.
Hudson, and Irene Adler), and “as to Holmes himself” and “as to Dr. Watson,” a
number of character traits.The court
therefore was never asked to, and did not, perform an explicit analysis of
whether Holmes, Watson, or other characters reached the threshold of
“distinctly delineated” characters worthy of copyright protection—but the clear
implication of this ruling is (a) that Holmes and Watson, as characters, were sufficiently
distinctly delineated in the pre-1923 stories to be protected by copyright, and
(b) that that copyright has expired.To
the extent that the characters were modified in the ten post-1923 stories,
those modified versions of the characters remain protected.The CDE protested that this holding would
“dismantle” the characters of Holmes and Watson into a public domain version
and a copyrighted version.The court was
unconcerned.

Personally, I’m less worried by the idea of “dismantled”
characters than by the particular character elements that the court found
protectable.The court identified three
character traits of Holmes and Watson as still protected:(1) Dr. Watson’s second marriage; (2) Dr.
Watson’s background as an athlete; and (3) Sherlock Holmes’s retirement from
his detective agency.As a factual
matter, this result is also an artifact of the case’s procedural history—the
court only considered the parties’ factual submissions and didn’t review the
text of Arthur Conan Doyle’s actual canonical writings.If it had, it would have observed, for
example, that Holmes’s retirement was actually first described in detail in a
public domain story, “His Last Bow.”Likewise, Watson’s second wife is factually far from the “character” the
court may have assumed she was—she is mentioned in passing and never even given
a name, much less identified by “distinctly delineated” character traits.

Setting these factual matters aside, however, the ruling
raises a deeper question:what does it
mean for a public domain character to have a protected character trait?Certainly, the court would not protect the
generic ideas of “Doctor with a background as an athlete” or “Doctor with a
second wife.”And the court has made
clear that Watson himself has fallen into the public domain—but his history as
an athlete and the existence of his unnamed second wife have not.The court reasoned that the later-published
stories constituted derivative works from the public-domain stories, and
provided “enough expressive variation from public-domain or other existing
works to enable the new work”—here, the historically athletic, second-married
version of Watson—“from its predecessors.”

On one hand, this conclusion likely differs from the way
most people experience serialized characters.We see them as unitary entities, about whom we simply learn more over
time as more facts are revealed to us.We likely imagine that those facts have always been there, even if we
did not know them.This is particularly
true of characters like Holmes and Watson, since their tales were not published
in chronological order.We therefore
experience their lives out of sequence, and assign the sequence as we
read.But dividing characters into
multiple versions—Watson 1.0 was distinctly delineated before 1923, and Watson
2.0 came later—reflects the reality of serialized production and, more
importantly, permits characters to enter the public domain in an orderly
manner.The alternative would be far
worse:copyright holders could, in
effect, create eternal copyright in characters simply by continuing to write
new stories about them.

But while the idea that new versions of characters may
retain protection after old versions fall into the public domain may be a fine
one, the ruling highlights a line-drawing problem:how new does a “new character trait” have to
be to create a new version of an old character?Drawing on case law about the level of originality required for copyrightability
in general, this court set the threshold as low as possible:all that is required is an “original
expression” sufficient to “enable the new work to be readily distinguished from
its predecessors.”Although this is
consistent with the law about protecting original “increments of expression” in
derivative works, it’s an odd result as applied to characters, since courts
have generally required a much higher level of originality—“distinct
delineation”—for copyright to attach to a particular character.The court notes that a “character, character
trait, and storyline” may each be copyrightable increments of expression in a
derivative work.But why not require the
same degree of distinctness from prior works to protect Watson 2.0 as to
protect Watson 1.0 in the first instance?The court does not explain.

Under this court’s reasoning, once a creator has gone to the
trouble of distinctly delineating a character, a relatively small increment of
new information about that character would, in essence, always create a “new”
version of the character, protectable until expiration of the new
copyright.This isn’t a significant
problem for adapters of Conan Doyle’s Holmes canon, since nearly every
meaningful trait about the characters and their settings was established in the
pre-1923 stories—in essence, therefore, the characters are entirely in the
public domain, but for three (indeed, arguably two) character traits.It’s also not a problem for new works of
individual authorship, since copyright protection for such works is tied to the
date of the author’s death, rather than the date of publication. But the
reasoning of this ruling could create a way for owners of work-for-hire
copyrighted characters to, effectively, extend protection indefinitely by making
incremental changes to their characters over time.That’s worrisome.

2. Declaratory judgment jurisdiction

The opinion also addressed declaratory judgment jurisdiction
in a post-DMCA world.The CDE argued
that the court should decline jurisdiction because there was no “actual
controversy” between the parties—Klinger had not yet produced his book, and had
no reasonable apprehension of litigation because the CDE hadn’t actually
threatened to sue.Its only explicit
threat had been to use the DMCA and keep Klinger’s book out of major retailers
such as Amazon and Barnes & Noble.The court rejected the CDE’s argument, ruling that, per Medimmune, the
actual controversy requirement may be satisfied without a threat of litigation,
and that the CDE’s DMCA threat established the existence of clear, adverse
legal interests.The CDE also argued
that the court should decline to exercise jurisdiction for prudential reasons,
as the court had no access to Klinger’s proposed book, but the court reasoned
that it could resolve the entire controversy by resolving the copyright status
of the elements Klinger proposed to include in the book.

This result seems right, for a number of reasons. First, it
recognizes the business realities of publishing:threatening to keep a book out of major
retailers (and thus out of consumers’ hands) is, no doubt, tantamount to
threatening litigation.It also helps
reinforce the important idea that cease & desist recipients have
alternatives other than backing down.More importantly, it can help alleviate the power imbalance set up by
the DMCA, whereby rights holders can have works taken down with relative ease,
but having them put back up is much more difficult.Of course, declaratory jurisdiction is far
from a panacea for that power imbalance—bringing a lawsuit is even more
daunting than sending a DMCA counter-notification!—but in situations like this,
where the DMCA claimant is relying on dubious rights, it provides an
opportunity for something broader than case-by-case counter-notification.

3. Impact on future adapters

This case draws a relatively clean line around the CDE’s
copyrights, such as they are, and therefore will likely provide significant
freedom to adapt the original Conan Doyle Holmes canon.This is because the preclusive impact of this
case is uneven, in adapters’ favor:as a
matter of civil procedure (specifically, the doctrine of non-mutual defensive
issue preclusion), the present ruling will likely preventing the CDE from prevailing
in pre-1923-based copyright claims not only against Klinger, but also against
other Holmes adapters—but it will probably not (according to the doctrine of
non-mutual offensive issue preclusion) bind future courts to this ruling’s
three examples of post-1923 protected material.This will undoubtedly make it more difficult for the CDE to assert
claims against adaptations not specifically based on post-1923 works.And of course even those adaptations may
constitute fair uses—in fact, it’s entirely likely that Klinger’s proposed
anthology would have been a fair use even if the characters of Holmes and
Watson had not been in the copyright public domain—but fair use questions will
have to wait for future cases.

It also won’t prevent Holmes adapters from suing each
other.In fact, most cases about
intellectual property in Sherlock Holmes have been among adapters:for example, Granada v.Lorindy involved claims among two producers of Sherlock Holmes
television series, and Musto v.Meyer involved a claim by an author of a medical journal article that
the book and film “The Seven Per Cent Solution” infringed copyright in his
article.This case may be informative in
such cases, but will not bind the courts.

Trademark questions must also wait for another day.The CDE’s attorney told the New York Times the case has no impact on its “existing trademark
claims.”This refers to the fact that
the CDE has actively pursued trademark protection for a number of words and
images relating to Sherlock Holmes, including the CDE’s logo and the words
“Sherlock Holmes.”This case has no
direct impact at all on any of the CDE’s trademark assertions, although it does
highlight the fact that that many different entities have used, and will
continue to use, the names and characters of Holmes and Watson without
permission from the CDE—a fact that significantly undermines any claim by the
CDE that the characters or their names have “secondary meaning” as source
identifiers for the CDE.

RT’s comments:
this case is a no-brainer, and in fact is evidence of just how crazily
expansive copyright is: I agree that the loose language in the opinion
suggesting that the incremental expression in “Holmes retired” or “Watson
remarried” is protectable is quite disturbing.At the very least, the doctrine of merger should prevent any control
over the basic postulate that Holmes retired, even if the details in Doyle’s in-copyright story must be avoided in the
absence of fair use or some other exception. As the court itself notes, the increment that
has to be added for copyrightability is an increment of expression, not an increment of just anything.It doesn’t make sense to say, as the court does, that
“characters, character traits and storylines” are inherently increments of expression
as opposed to “ideas, plots, dramatic situations, and events,” which are not.(What’s the difference between a storyline and a dramatic situation or a plot?What about some dramatists’ contention that
all plot derives from character?)I’m
heartened, however, by the court’s caution that neither party submitted any portion
of the canon for review.This is a
ruling on a declaratory judgment plaintiff’s motion for summary judgment in the
absence of evidence.

As for the trademark issues Professor Rosenblatt highlights,
they too should be no-brainers under Dastar,
and I hope and trust that courts will see this.In fact, I suspect the Holmes ouvre might be a particularly good test
case for preserving the freedom to copy, and to tell people what you’ve copied.

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I speak for myself. On this blog, I do not and cannot speak for Georgetown Law, the Organization for Transformative Works and/or AO3.